FEDERAL COURT OF AUSTRALIA

Acohs Pty Ltd v Ucorp Pty Ltd (No 2) [2012] FCAFC 67

THE COURT ORDERS THAT:

1.    The appeal is allowed.

2.    Orders 1 and 2 made by the primary judge on 10 June 2010 are set aside.

3.    The first respondent, whether by its servants, agents or otherwise, is restrained from, without the licence of the appellant/applicant:

(a)    reproducing in a material form the whole or any substantial part of any of the copyright works;

(b)    communicating to the public the whole or any substantial part of any of the copyright works; or

(c)    authorising any other person to do any of the acts specified in paragraphs (a) or (b) hereof.

    In this order “copyright works” shall mean any of the material safety data sheets listed as “Authored by ACOHS” in Annexure A and Annexure A1 to the Amended Particulars of Copyright Ownership dated 31 August 2009.

4.    All outstanding issues (including the costs of the proceeding before the primary judge) are remitted to the primary judge for determination in light of this Court’s reasons for judgment.

5.    The respondents are to pay to the appellant 70% of the appellant’s costs of the appeal.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

1    On 2 March 2012 we delivered reasons for judgment in this matter: see Acohs Pty Ltd v Ucorp Pty Ltd [2012] FCAFC 16. In our reasons for judgment we indicated that, in our view, injunctive relief should be granted to restrain the respondents from reproducing or authorising the reproduction of “the Acohs-authored MSDS” without the licence of the appellant. We also indicated that there should be an order for costs of the appeal in favour of the appellant subject to an allowance reflecting the measure of the respondents’ success on the issues arising for determination on the appeal. The parties have filed written submissions and proposed short minutes of order which address these matters.

2    It follows from our reasons for judgment that orders should be made allowing the appeal and setting aside orders 1 and 2 made by the primary judge on 10 June 2010. There should also be an order remitting the matter to the primary judge for determination of all outstanding issues including the costs of the proceeding before the primary judge.

3    The respondents have proffered an undertaking to the Court in response, we assume, to what we said in our reasons for judgment concerning injunctive relief. Under the undertaking proffered by the respondents, they propose, within 14 days of the making of orders (inter alia) allowing the appeal:

… not to reproduce, authorise the reproduction of, or supply to any third party, any of the Material Safety Data Sheets contained in:

(a)    the sub-folder “Authored by Acohs” within the folder “The Applicant’s MSDS” in Annexure A to the Amended Particulars of Copyright Ownership dated 31 August 2009;

(b)    the sub-folder “Authored by Acohs” within the folder “Files from Document 651” in Annexure A1 to the Amended Particulars of Copyright Ownership dated 31 August 2009; or

(c)    the sub-folder “Authored by Acohs” within the folder “Files from Document 658” in Annexure A1,

(together, the “Acohs-authored MSDS”) without a prior request for the Acohs-authored MSDS (or any of them) from a customer of the Respondents ...

4    The respondents also filed an affidavit of Catherine Jeddou affirmed on 15 March 2012. No leave was sought or obtained to rely upon that affidavit and we have not had regard to it.

5    We are not disposed to accept an undertaking in the terms proffered by the respondents. We indicated in our reasons for judgment that we were of the view that injunctive relief should be granted to restrain the respondents from reproducing or authorising the reproduction of the Acohs-authored MSDS without the licence of the appellant. We remain of that view subject to two qualifications.

6    First, we consider the injunction should also operate to prevent the first respondent from communicating the Acohs-authored MSDS to the public or authorising any such communication without the licence of the appellant.

7    Second, although seeking injunctive relief against both respondents in its amended notice of appeal, the appellant did not invite us, in its short minutes of order, to grant an injunction against the second respondent. Accordingly, we do not propose to make any such order against him. The proposed short minutes of order recognise that the primary judge did not determine the whole of the case against the second respondent and we were not asked to make additional findings on appeal. We consider that the issue of authorisation (assuming that it is still contested by the second respondent) should be remitted to the primary judge for determination. The primary judge may then determine what further relief should be granted to the appellant against both respondents.

8    The appellant submitted that the respondents should pay 70% of the appellant’s costs of the appeal. The respondents submitted that it was open to the Court to require each party to bear its own costs but that, if the Court was minded to make a costs order in the appellant’s favour, then the respondents should not be required to pay more than 30% of the appellant’s costs of the appeal.

9    In our opinion, the appellant has been substantially successful in its appeal. In particular, the appellant succeeded on the following issues:

    whether an implied licence extended to the first respondent’s reproduction of the Acohs-authored MSDS or its communication or supply of those works in the absence of a request for those works for safety related purposes;

    whether the primary judge erred in finding that the appellant had failed to discharge its onus of proof to negative the existence of a licence in favour of the respondents;

    whether copyright in MSDS created by the appellant for Castrol, BP or Dow had been assigned by the appellant to those entities;

    whether the appellant was estopped from asserting the absence of an implied licence by the doctrine of approbation and reprobation;

    whether the primary judge’s finding that copyright subsisted in the Acohs authored MSDS travelled beyond the appellant’s pleaded case.

On the other hand, the respondents succeeded on the following two issues:

    whether the HTML source codes for each Infosafe MSDS was an original literary work; and

    whether the transcribed MSDS were original literary works.

There was one other issue raised by the respondents’ notice of contention which we did not find it necessary to decide. It concerned the existence and scope of any implied licence to reproduce the HTML source codes for each Infosafe MSDS.

10    Accordingly, of the seven issues argued and determined in the appeal, the appellant was successful with respect to five of them.

11    We consider that the order of the Court with respect to the costs of the appeal should recognise that the appellant was substantially successful and that most of the time spent arguing the appeal concerned issues upon which the appellant prevailed.

12    In our opinion the figure of 70% proposed by the appellant is reasonable having regard to the respondents’ overall lack of success. In all the circumstances, we consider that the respondents should be required to pay 70% of the appellant’s costs of the appeal.

13    There will be orders accordingly.

Associate:

Dated:    14 May 2012